Appeal No. 1999-1393
Application No. 08/242,344
Notwithstanding this lack of assurance that a human homolog could be
successfully retrieved the examiner believes that an artisan of ordinary skill would
have expected to retrieve a human GluR5-2 homolog having several conservative
and nonconservative substitutions relative to the rat sequence. We are left to guess
at which EAA3 subtype (e.g. EAA3a, EAA3b, EAA3c, or EAA3d) this homolog
would represent.
In our opinion, more is required than merely a high level of homology
between GluR5-2 and EAA3a-b to suggest the use of techniques disclosed by
Puckett to obtain DNA encoding any one of EAA3a-d. We compare the factual
evidence before us, in this case, with the factual record present in Ex parte
Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995) where a rejection based
on the rationale applied in this case was affirmed. In Goldgaber, in addition to
providing the methodology of isolating, identifying and sequencing a DNA that
would encode a known polypeptide, the prior art indicated that the polypeptide for
which the DNA was sought had been purified and the amino acid sequence was
known. (Goldgaber at 1173). There was also information and guidelines as to the
preparation of degenerate oligonucleotide probes based upon that known amino
acid sequence which would have been useful in the disclosed isolation process. (Id.
at 1174). On the record before us, and as argued by appellants, the proteins of the
claimed invention were not known to be present in humans. Further, the examiner
has provided no evidence which would provide a reasonable suggestion,
motivation, or direction which would have led one of ordinary skill in this art to use
the techniques of Puckett to isolate and identify the DNA sequences which would
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